Fallwell.com back in the hands of gripe site owner

Fourth Circuit reverses earlier decision of district court which had found in favor of TV evangelist Jerry Falwell.

Apellant Lamparello developed a website at www.fallwell.com that was critical of Reverend Jerry Falwell’s political views. The home page contained a disclaimer stating that the site was not affiliated with Reverend Falwell or his ministry, and provided a link to Reverend Falwell’s site. Lamparello never sold any goods or services from fallwell.com.

Reverend Falwell sent cease and desist letters to Lamparello in 2001 and 2003, demanding that Lamparello stop using fallwell.com. After receiving these letters, Lamparello filed a declaratory judgment action, asking the court to determine that the use of fallwell.com did not infringe on Reverend Falwell’s rights. Reverend Falwell countersued, claiming, among other things, trademark infringement and cybersquatting. The district court sided with Reverend Falwell, and ordered the domain name transferred. Lamparello sought review.

On appeal, the Fourth Circuit reversed. It held that the district court had wrongly found trademark infringement, as there was no likelihood of confusion between the respective sources of website content. The court emphasized that Lamparello’s website in no way resembled Falwell’s, and that Lamparello had created the site only as a forum for criticizing ideas. Most importantly, the parties did not offer similar goods or services. There had been no actual confusion, which was made clear by reports of certain visitors to Lamparello’s site who “quickly realized that Reverend Falwell was not the source of the content therein.”

The court also determined Reverend Falwell had failed to demonstarte that Lamparello had registered the domain name with a bad faith intent to profit. Such a showing is necessary to a claimant’s success under the ACPA, 15 U.S.C. §1125(d). Of particular importance was the fact that Lamparello had used the domain name “for purposes of comment, [and] criticism,” such use constituting a “bona fide noncommercial or fair use” under the ACPA.

The balance of the various “bad faith factors” found at 15 U.S.C. §1125(d)(1)(B)(i) also weighed in favor of Lamparello. Specifically, as noted in the portion of the opinion dealing with trademark infringement, the court found that there was no likelihood of confusion as to the source or affiliation of the website content. Further, Lamparello had never attempted to sell, to Reverend Falwell or anyone else, the rights in the fallwell.com domain name, nor had he engaged in the practice of registering numerous domain names.

The court’s opinion addressed several other issues raised by the parties not necessary for the final determination. For example, the opinion includes a thorough analysis of the initial interest confusion doctrine. Such an analysis was not necessary, as the Fourth Circuit has never adopted the initial interest confusion doctrine. In any event, the case is an interesting and thought-provoking read on a modern issue of trademark law.

For a more thorough analysis, be sure read Professor Eric Goldman’s remarks over at his Technology & Marketing Law Blog.

See also Mark Partridge’s post on the case at his Guiding Rights Blog.

Lamparello v. Falwell et al., No. 04-2011 (4th Cir., August 24, 2005).

Trademark on Supplemental Register no help in domain name proceeding

A WIPO administrative panel recently denied a request to transfer the domain name oilchanger.com, finding that the complainant had failed to prove the essential element of enforceable trademark rights in the domain name.

Oil Changer, Inc., operator of numerous oil changing facilities in California, claimed that its registration of the marks OIL CHANGER and OIL CHANGERS on the Supplemental Register with the United States Patent and Trademark Office served as prima facie evidence of its ownership and the validity of the marks. However, the panel refused to recognize any such presumption for marks on the Supplemental Register.

The panel determined that registration on the Supplemental Register was an admission that the marks were not inherently distinctive at the time the applications for them were filed. Further, the panel determined that registration on the Supplemental Register was evidence that there were no common law rights at the time of the applications. Finally, there was insufficient evidence in the record to show that the complainant’s marks had acquired secondary meaning.

Oil Changer, Inc. v. Name Admin., Inc., Case No. D2005-0530 (July 28, 2005).

Court zaps ISP’s request to prohibit TV network’s use of CURRENT trademark

Injunctive relief denied in trademark suit against Current TV, as court finds broadband services and television network services “not related or only tangentially related.”

Plaintiff Current Communications provides broadband over power line (BPL) services to about 2,100 customers in the Cincinnati, Ohio area. It owns several trademarks used in connection with these services. Defendant Current Media operates the new television network Current TV, which seeks to “democratize” television by airing content that users have submitted through the Internet.

Current Communications sued Current Media for, among other things, trademark infringement, and asked the court to prohibit Current Media from using the word “Current” in connection with its newly-launched network. The court denied the plaintiff’s request, and refused to enter an injunction.

The court went through a thorough analysis of the “likelihood of confusion” factors to determine that injunctive relief would not be proper. Current Communications had not shown that it would likely succeed on the merits of its trademark infringement claim.

One of the likelihood of confusion factors was the extent to which the services provided by the plaintiff and defendant were related. The court concluded that the parties are not direct competitors, “[n]or is it likely that they will become direct competitors.” Accordingly, the court concluded that there was no likelihood of confusion as to the source of the parties’ services, and injunctive relief would not be proper.

Current Comm. Group, LLC v. Current Media, LLC, 2005 WL 1847215 (S.D.Ohio, Aug. 2, 2005).

Evidence of intentional copying of domain name gives rise to presumption of trademark distinctiveness

Plaintiff Fryer sued his former employee, Bernie Brown (no relation to the author of this weblog), after Brown set up a website for his new competing auto upholstery business. Since 2000, Fryer had maintained the website located at autoupholsterykits.com. In 2002, Brown set up his website at autoupholsterykit.com.

Fryer’s suit alleged, among other things, violation of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. §1125(d). In a motion for summary judgment, Brown argued that the domain name autoupholsterykits.com was a generic term, and thus not subject to trademark protection. He argued in the alternative that if it was not a generic term, it was at least a descriptive term without secondary meaning.

The court denied the motion for summary judgment as to the ACPA claim, holding that the domain name was a distinctive trademark and subject to protection against infringement. The court did some interesting maneuvering, however, to reach this conclusion. In essence, it avoided the real question of whether the domain name may actually be a generic term or merely describe the goods provided. Instead, the court looked to evidence of intentional copying of the plaintiff’s domain name by the defendant.

In so many words, the court conceded that an analysis of the domain name vis-à-vis the goods provided in connection therewith would be like stepping into a quagmire: “The distinctions between generic and descriptive and descriptive and suggestive are often illusory. Accordingly, the Court relies upon the link between the mark’s secondary meaning and the likelihood of confusion as critical.”

So the court analyzed the relationship of intentional copying of plaintiff’s domain name to both the likelihood of confusion and secondary meaning. It noted that “[w]hen intentional copying is at issue, the court may presume the likelihood of confusion.” Further, the court noted that “evidence of deliberate copying establishes a prima facie case of secondary meaning.”

Accordingly, the court denied summary judgment where there were factual issues relating to whether the defendant had intentionally copied the domain name.

Fryer v. Brown, 2005 WL 1677940 (W.D.Wash., Jul 15, 2005).

Has Microsoft forgotten to file a trademark application for the name of its new operating system?

Microsoft has announced that the name of its new operating system coming out next year will be called “Vista.” As of the date of this posting, a search of the records of the United States Patent and Trademark Office reveals no applications on file for the mark VISTA owned by Microsoft. Is this an oversight or merely a consequence of the several day backlog for getting information about new applications online? Perhaps it’s just a load date issue.

Further: More observations on this subject over at Infamy or Praise.

And further: Dennis Crouch over at Patently-O has a this post on the delay one finds in the world of patent applications.

Decision gives guidance on domain names as trademarks

John Welch at the TTABlog provides a detailed analysis of the Trademark Trial and Appeal Board’s recent decision in In re Eddie Z’s Blinds and Drapery, Inc. which affirmed the examiner’s refusal to register BLINDSANDDRAPERY.COM as a trademark.

If you’re familiar with the Trademark Trial and Appeal Board, you can stop reading this post and click on over to the TTABlog to read about the decision. For a little bit of context, read the next two paragraphs.

The Trademark Trial and Appeal Board (TTAB in shorthand) is a panel of administrative trademark judges in the United States Patent and Trademark Office that, among other things, hears appeals of trademark applicants who feel that their trademark registrations were wrongfully refused. In this context, the outcome of a proceeding is to determine whether the trademark in question is entitled to registration. The board does not award damages for trademark infringement or provide injunctive relief.

A generic term is not entitled to registration as a trademark. For example, one could not trademark the word APPLE if he or she is using the word when selling, well, apples. (The question of using the word APPLE in connection with different goods like computers is a separate inquiry – in such a case APPLE would not be generic, but would be arbitrary.)

Seventh Circuit issues first ever reported appellate decision under 1935 Indian Arts and Crafts Act

The Seventh Circuit’s recent decision in the case of Native American Arts, Inc. v. The Waldron Corp. may be a bit off-topic for this blog – it’s not a case involving the Internet – but it’s still noteworthy because of its legal novelty and potential interest to trademark practitioners. This is the first reported appellate decision under the Indian Arts and Crafts Act, 25 U.S.C. §305 et seq., which was enacted way back in 1935. Judge Posner’s decision upheld the judgment in favor of the defendant, but overturned the district court’s determination that certain regulations under the Act are unconstitutional. The court held that a jury is not required to be instructed that an “unqualified use” of the word “Indian” or a particular tribe’s name gives rise to a false suggestion that an art or craft item is an “Indian product.”

Native American Arts, Inc. v. The Waldron Corp., — F.3d —, 2005 WL 475357 (March 2, 2005).

KERACARE trademark diluted by registration of domain name KeraCare.com

The United States District Court for the Northern District of Illinois granted summary judgment in favor of a plaintiff who claimed that the defendant’s registration and use of fifteen domain names incorporating variations of plaintiff’s trademark KERACARE caused dilution of the mark.

Plaintiff Avlon owns the incontestable trademark registration for the mark KeraCare for hair care products. Defendant Robinson is in the hair care products industry as well, and does business under the name Sheldeez Hair Prouducts and Salon. Robinson registered at least fifteen domain names incorporating variations of Avlon’s mark, including www.keracare.com. From these sites, Robinson offered for sale hair care products made by both Avlon and Avlon’s competitors.

Avlon sued Robinson claiming, among other things, that Robinson’s incorporation of Avlon’s mark in his domain names diluted Avlon’s mark, in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). (Dilution is defined in Section 45 of the Lanham Act, 15 U.S.C. § 1127 as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.) Avlon moved for summary judgment on the dilution claim, and the court granted Avlon’s motion.

Robinson first argued that Avlon had failed to show the KeraCare mark is famous. The court disagreed, and found that the mark is famous. The court noted that Robinson’s actions in part betrayed the mark’s fame – if the mark was unfamiliar to the vast majority of shoppers, Robinson would not have registered at least fifteen variants of the word as domain names. The court also gave weight to the fact that Avlon’s mark was incontestable under Section 15 of the Lanham Act, 15 U.S.C. §1065. Finally, the court also gave weight to the fact that Avlon sells millions of dollars of KeraCare products annually, and that Robinson himself testified that the KeraCare line is one of four product lines that are “well known and respected in a marketplace ‘flooded’ with product lines.”

Robinson next argued that Avlon had failed to establish actual dilution of its mark as required by the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc. et al. 537 U.S. 418 (2003). The court was not persuaded by this argument. It looked to the portion of Moseley which states that “actual dilution can reliably be proved through circumstantial evidence–the obvious case is one where the junior and senior marks are identical.” Because Robinson’s domain names used Avlon’s exact marks, the court found that Avlon had shown actual dilution. The court noted that actual dilution was also supported by the fact that Robinson’s control over all possible variations of Avlon’s marks permitted him to decide what messages and goods are associated with such marks.

Avlon Indus. v. Robinson, 2005 WL 331561 (N.D.Ill. Feb. 8, 2005).

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